OPPOSITION No B 3 003 566

José Barrios Navarro, Cervantes, 13-15. 6º 4ª Badalona, 08915 Barcelona, Spain (opponent), represented by Isern Patentes y Marcas, S.L., Avenida Diagonal, 463 bis, 2° piso, 08036 Barcelona, Spain (professional representative)

a g a i n s t

Shenzhen Jinfeng Audio Appliance Co. Ltd., 1/F, No.1 Comprehensive Building, Huangtian Jiatiangang Industrial Zone, Xixiang Street, Bao’an District, 518128 Shenzhen, Guangdong, China (applicant), represented by Metida Law Firm Zaboliene and Partners, Business center Vertas Gynéjų str. 16, 01109 Vilnius, Lithuania (professional representative).

On 24/10/2018, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 003 566 is partially upheld, namely for the following contested goods:

Class 9: Batteries, electric; materials for electricity mains [wires, cables].

2. European Union trade mark application No 17 182 502 is rejected for all the above goods. It may proceed for the remaining goods.

3. Each party bears its own costs.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 182 502 ‘AUDAX’. The opposition is based on European Union trade mark registration No 12 266 276 . The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

1. The goods and services

The services on which the opposition is based are the following:

Class 35: Advertising; business management; business administration; office functions, consultancy, business information, market studies, business management and professional business consultancy and business reports, all the aforesaid relating to energy and renewable energy, energy installations, energy plants, energy markets, and the electricity market, in any of its forms, and energy supply; wholesaling and retailing of gas and electricity.

Class 39: Transport, packaging and storage of goods; distribution of energy, distribution of electricity and gas, supply of electricity and gas; distribution and storage of electricity and gas.

Class 42: Advisory services relating to the use of energy; engineering services in the field of electrical power and natural gas production.

The contested goods are the following:

Class 9: Batteries, electric; materials for electricity mains [wires, cables]; theft prevention installations, electric; computers; computer peripheral devices; sound transmitting apparatus; video screens; electronic telecommunications apparatus; printed circuit boards; cabinets for loudspeakers.

As a preliminary remark, it is to be noted that according to Article 33(7) EUTMR, goods or services are not regarded as being similar to or dissimilar from each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

The contested batteries, electric; materials for electricity mains [wires, cables] are similar to a low degree to the opponent’s advisory services relating to the use of energy in Class 42. Advisory services refer to providing advice that is tailored to the circumstances or needs of a particular user and that recommends specific courses of action for the user. These goods and services are complementary; they have the same end users and producers/providers.

The opponent claims that the contested theft prevention installations, electric; computers; computer peripheral devices; sound transmitting apparatus; video screens; electronic telecommunications apparatus; printed circuit boards are devices powered by electricity and that accordingly they are similar to the opponent’s services, since they are complementary and target the same relevant public. The opponent also argues that the contested cabinets for loudspeakers are substantial parts of loudspeakers, which are also complementary to the opponent’s services and target the same relevant public as these services, and that consequently these goods are similar to a low degree to the opponent’s services. The Opposition Division does not agree with these arguments for the reasons explained below.

The facts that the abovementioned contested goods are powered by electricity and that cabinets for loudspeakers are parts of loudspeakers do not render these goods similar to the opponent’s services. Contrary to the opponent’s arguments, the goods and services in question are not complementary and the fact that they may target the same relevant public is not sufficient for a finding of a similarity. The natures of these goods and services are obviously different. Moreover, they have different purposes and methods of use. These goods and services are produced/provided by different companies and are usually distributed through different channels. Finally, they are not in competition. Therefore, the contested theft prevention installations, electric; computers; computer peripheral devices; sound transmitting apparatus; video screens; electronic telecommunications apparatus; printed circuit boards; cabinets for loudspeakers are dissimilar to all the opponent’s services.

In particular, it is important to note that the opponent’s advertising services in Class 35 consist of providing others with assistance in the sale of their goods and services by promoting their launch and/or sale, or of reinforcing a client’s position in the market and acquiring competitive advantage through publicity. These services are provided by specialist companies, which study their client’s needs, provide all the necessary information and advice for marketing the client’s goods and services, and create a personalised strategy for advertising them through newspapers, websites, videos, the internet, etc. The fact that some of the contested goods may be used as a medium for disseminating advertising material, such as the contested video screens, sound transmitting apparatus or electronic communication apparatus in Class 9, is insufficient for a finding of similarity. Therefore, these goods and services are considered dissimilar.

Transport, packaging and storing services in Class 39 are not considered similar to the contested goods in Class 9. These services are provided by specialist companies whose business is not the manufacture and sale of the contested goods, although the goods can be transported, packaged or stored. The services differ from the goods in terms of their nature, purpose and method of use. They do not have the same distribution channels and are not in competition. Therefore, they are dissimilar.

The opponent’s advisory services related to the use of energy are not related to any of the contested goods, except those related to the energy field already compared above. Therefore, they are dissimilar.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be similar are directed at the public at large and at business customers with specific professional knowledge or expertise in the field of energy whose degree of attention varies from average to high.

3. The signs

	AUDAX
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier trade mark is a figurative mark formed by the word ‘audax’ depicted in stylised lower case letters.

The contested sign is a word mark consisting of the word ‘AUDAX’.

According to case-law, a word mark is a mark consisting entirely of letters, of words or of associations of words, written in printed characters in normal font, without any specific graphic element (20/04/2005, T‑211/03, Faber, EU:T:2005:135, § 33; 13/02/2007, T‑353/04, Curon, EU:T:2007:47, § 74). The protection offered by the registration of a word mark applies to the word stated in the application for registration and not to the individual graphic or stylistic characteristics which that mark might possess (22/05/2008, T‑254/06, RadioCom, EU:T:2008:165, § 43). Therefore, it is irrelevant whether the word mark is depicted in lower or upper case letters.

The element ‘AUDAX’ of the earlier mark and of the contested sign may be associated by a part of the relevant public with a type of long-distance road cycling event in which participants must navigate a route within a specified period of time (information extracted from Oxford English Dictionary online edition at https://en.oxforddictionaries.com/definition/audax at 15/10/2018). Since this meaning is neither descriptive nor allusive in relation to the relevant goods and services, it is distinctive. For the remaining part of the public, the word ‘AUDAX’ is meaningless and, therefore, also distinctive.

The figurative aspect of the earlier mark is limited to the slight stylisation of the word element and is not distinctive.

Visually, the signs coincide in their verbal element and differ in the graphical depiction of the earlier mark. Considering that the stylisation of the earlier mark is not striking and that, as stated above, it is not relevant if a word mark is depicted in lower or upper case letters, the signs are visually similar to a high degree.

Aurally, the signs coincide in the sound of the letters ‘AUDAX’, present identically in both signs. Therefore, the signs are aurally identical.

Conceptually, reference is made to the previous assertions concerning the semantic content conveyed by the marks. As the signs will be associated with the same meaning by part of the relevant public, they are conceptually identical. For the remaining part of the public, neither of the signs has a meaning and accordingly a conceptual comparison is not possible; therefore, the conceptual aspect does not influence the assessment of the similarity of the signs for this part of the public.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that his mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the services in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings.

In the present case, some of the goods are similar to a low degree to the opponent’s services and target the public at large and business customers, whose degree of attention varies from average to high. Furthermore, the earlier mark has an average degree of distinctiveness. The signs are visually similar to a high degree and aurally identical; conceptually, they are identical for part of the public and not comparable for another part. The differences between the signs are confined to non‑distinctive aspects, namely the stylisation of the word element of the earlier mark.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C‑342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26).

Even consumers who pay a high degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T‑443/12, ancotel, EU:T:2013:605, § 54).

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C‑39/97, Canon, EU:C:1998:442, § 17). In the present case, the aural and (for part of the public) conceptual identities and high degree of visual similarity between the signs offset the low degree of similarity between the goods and services.

Considering all the above, the Opposition Division finds that there is a likelihood of confusion on the relevant public for the goods found to be similar to a low degree and therefore the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration No 12 266 276.

It follows from the above that the contested trade mark must be rejected for the goods found to be similar to a low degree to those of the earlier trade mark.

The rest of the contested goods are dissimilar. As similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this Article and directed at these goods cannot be successful.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 109(3) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful for only some of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Zuzanna STOJKOWICZ

Paloma PERTUSA MARTÍNEZ

Birgit FILTENBORG

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.